Accession to Madrid protocol may worsen local IP registration issues say researchers

By Chathuri Dissanayake

A premier research organisation in the country yesterday warned of the dangers of ad hoc implementation of the Madrid protocol prior to addressing issues in the local registration handled by National Intellectual Property Office (NIPO), despite Government initiatives to accelerate the process.

A study by Verité Research highlighted that the country’s ability to benefit from the Madrid Protocol, which provides an easy platform for trademark registration abroad, is hindered due to delays experienced in the local office in processing applications for trademark registration.

“Although the number of application has grown over the years, the NIPO has not been able to process the applications in time. It takes about three years on average to process an application and sometimes five or six years. While the applications for registrations have grown to about 5000 per year, NIPO can only register about 1000 year,” Verité Research Executive Director Nishan De Mel said.

The Madrid Protocol is a centralised, simplified system of registering trademarks abroad. It is administered by the World Intellectual Property Organisation (WIPO), covering 114 states and organisations. The process allows companies to register their trademark in multiple countries by filing a single application in one language while paying a single set of fees, with a guarantee of processing the applications within a fixed period of one to one and half years. The process eliminates the need to hire local attorneys in each country where the company wishes to register the trade mark, saving a lot of money on legal fees. Over the years, local companies which have gone global with their trademarks such as MAS, have had to go through the process individually incurring heavy costs and time. Sri Lanka became a party to the protocol in 2015, following requests made by the local business community, and allocated Rs. 100 million in the 2016 budget to accelerate the accession.

Highlighting that local registration is a crucial element of registering the trademark abroad, De Mel pointed out that delays in the local office could jeopardise the chance for local brands to register abroad, costing business opportunities. De Mel also highlighted that pressure created by the Madrid protocol to process international applications within 1.5 years may further delay registering domestic applicants.  

According to Verité Research, NIPO takes around three to five years to process trademark applications, highlighting a widening gap between local trademark applications and registrations.

“Compared to other middle-income countries like Philippines, Bulgaria and Vietnam where the local trademarks registration is over 50% of applications per year, Sri Lanka is lagging behind. In Sri Lanka it is as low as 14%,” De Mel explained.

The research was not able to identify the bottlenecks within the registration process or other factors causing delays, De Mel said, as the researchers were not given access to the relevant data or other information. National Chamber of Expoters Sri Lanka President Sarada Desilva also accused NIPO of being uncooperative and reluctant to obtain assistance from WIPO to upgrade their processes. “There are not enough officers who understand the subject. The Ministry of Industry doesn’t have expertise on the matter. But NIPO is not willing to obtain help from WIPO either,” he claimed. However, NIPO Director General G. R. Ranawaka refuted the argument, claiming that the national body is gearing to meet the increase in demand for their services with the accession of Madrid protocol. However, she confirmed that NIPO is only able to process about 1000 applications a year, a vast improvement compared to the 250 registrations done five years ago. The institution has cleared a backlog of 35000 applications within the last three years, Ranawaka claimed, but has another 12,000 applications to clear before end of this year, when the Madrid protocol is scheduled to be fully implemented.

She also claimed that the institution is severely constrained due to a lack of qualified senior officers who understand the subject.

“There is no Deputy Director General or any Directors appointed and it is a complicated process to recruit new officers to senior posts as it is not allowed under State regulations. So, I’m the only one who is available. And we have a cadre requirement of 20 intellectual Property Officers but we have only 10,” Ranawaka said.

To address the issue, the institution has trained 15 development officers to process the application but the final approval has to be given by the Director General as there are no Directors or Deputy Director Generals to carry out the function which has created another bottle neck.

“We have finally got approval from Public Service Commission to recruit outside the Government service for the senior level posts. The institution doesn’t have the necessary space to house a full cadre either, so if we are able address these issues then we won’t have a problem,” she claimed.